Volkswagen AG
[2008] ATMO 79
•8 September 2008
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Volkswagen AG to registration of trade mark application 1156865(37) - VOLKSWORLD - filed in the name of Anton David Kardos and request by Volkswagen AG for extension of time to serve evidence in support.
| Delegate: | Iain Thompson |
| Representation: | Applicant for extension: Written submissions by Lance Scott of Spruson & Ferguson |
| Decision: | 2008 ATMO 79 Regulation 5.15: Application for extension of time in which to serve evidence in support refused. |
Background
On 17 July 2007, Volkswagen AG (‘the applicant for extension’) filed Notice of Opposition to the registration of the trade mark current details of which appear below:
Application No: 1156865
Owner: Anton David Kardos
Priority Date: 19 January 2007
Date advertised: 17 May 2007
Services: Class: 37 Maintenance or repair of automotive vehicles
Trade Mark: VOLKSWORLD
Endorsement: Provisions of subsection 44(4) applied.
The endorsement reflects evidence of use of the VOLKSWORLD trade mark, supplied by the applicant for registration to the examiner, before the priority dates of 894448(12) VOLK,[1] and 1133944(4)(7)(12)(35)(36)(37) VOLKS[2]. Put briefly, the evidence supplied to the examiner by the applicant for registration shows claimed use of the applied-for trade mark by the applicant for registration since 1976.
[1] Owned by Rays Co Ltd.
[2] Owned by Volkswagen AG.
The Notice of Opposition is couched in extremely broad terms and embraces grounds under sections 41, 42, 43, 44, 58, 59, 60, and 62 of the Trade Marks Act 1995 (‘the Act’) and also seeks the exercise of the Registrar’s discretion.
On 16 October 2007, the applicant for extension sought an extension of time of three months under the provisions of regulation 5.15 of the Trade Mark Regulations 1995 because it was conducting research in relation to its evidence in support: specifically, the applicant for extension declared it was awaiting the results of a request made under the Freedom of Information Act 1982. (This FOI request is discussed below).
On 17 January 2008, the applicant for extension made a further application for extension stating, in a declaration, “The opponent experienced some delays in obtaining materials sought under the Freedom of Information Act from the Trade Marks Office. These materials are highly relevant to the opposition, given that the application was accepted on the basis of prior continuous use. The materials have now been received and reviewed, and have been forwarded to the opponent for review, and work has commenced on the preparation of the evidence in support. Further time is required for the opponent to prepare, finalise and serve its evidence in support.”
On 7 February 2008, a delegate of the Registrar of Trade Marks wrote to the applicant for extension allowing the extension. And then she stated, “Warning. With this extension it will mean that the opponent has had 9 months in which to serve its evidence in support. This is the Registrar’s benchmark in such matters. Therefore, I place you on notice that it is highly unlikely that any further extension beyond the Registrar’s benchmark will be allowed unless the opponent is able to demonstrate that circumstances outside its control have unexpectedly delayed the service of its evidence, or that serious settlement negotiations have commenced between the parties.”
On 17 April 2007, the applicant applied for a further extension of time of one month and declared, “… since the last extension request, the opponent has made significant progress with its evidence in support of the opposition. In particular, my firm has prepared a comprehensive declaration, which will form the evidence in support of the opposition. However, there have been some delays settling the final aspects of this declaration. In particular, one of the local representatives of Volkswagen Australia, [sic] has been unavailable to speak to my firm for the purpose of providing some of the information and settling on the terms of the declaration. The evidence gathering process is complex, given that the evidence requires input from both Germany and Australia. However, the declaration is at a very advanced stage and it is anticipated that the declaration should be settled, signed and served within the applied for time period.”
This application for extension was allowed by the delegate but drew a further warning in similar terms to that outlined at paragraph 4, above.
On 19 May 2008, the applicant for extension filed a further application for extension in which to serve its evidence in support and declared in support of the application, “the opponent has made significant progress with the evidence is support of the opposition. In particular, my firm prepared a comprehensive declaration which will form the evidence in support of the opposition. Since the last extension request, my firm has had a conference with a representative of Volkswagen Australia [sic] and advanced the principal statutory declaration in support of the extension request. [sic] However, additional time is required in order to settle this declaration. In addition, a principal of my firm is visiting Volkswagen AG in the latter half of May 2008, with a view to discussing this matter and settling the evidence.”
10. On 28 May 2008, the delegate informed the applicant for extension that she intended to refuse the last request for extension and that the applicant for extension had the right to be heard.
11. On 10 June 2008, the applicant for extension requested to be heard. A hearing date of 23 July 2008 was appointed and, as a delegate of the Registrar of Trade Marks, I attended the Sydney State Offices of IP Australia in order to hear the applicant for extension’s arguments. The applicant for extension did not attend the hearing and shortly before the time scheduled for the hearing submitted written arguments by Lance Scott, legal practitioner of Spruson & Ferguson.
12. It transpires that the material proposed as evidence in support of the opposition was delivered to the applicant for registration and the Trade Mark Office on 21 July 2008 and I must now decide whether to grant the present extension, noting that there are two following extensions of time sought by the applicant for extension from 17 May 2008 until 17 August 2008 so that the service and filing of the evidence has ultimately occurred within the allowed time.
13. The material in question proposed as evidence in support comprises a declaration by Lance Scott, legal practitioner, made on 17 July 2008 and another one by Nicholas Angelis, General Manager for Sales and Dealer Development of Volkswagen Group Australia Ltd, made on the same date.
Reasons
14. Regulation 5.15 of the Trade Mark Regulations 1995 provides:
5.15Extension of period to serve evidence and service of further evidence
(1)A party to the opposition proceedings may apply to the Registrar:
(a)for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or
(b)for permission to serve a copy of further evidence on the other party.
(2)The Registrar may grant an application on reasonable terms specified by the Registrar.
(3)The Registrar must not grant an application unless the Registrar:
(a)is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and
(b)has given the parties a reasonable opportunity to make representations concerning the application; and
(c)is reasonably satisfied that:
(i)in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence; and
(ii)in the case of an application to which paragraph (1) (b) applies — permission to serve a copy of further evidence;
is appropriate.
(4)For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
(5)If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.
(6)Subregulations (2), (3) and (4) apply to an application under subregulation (5).
15. Thus, I must not grant the extension unless:
· I am reasonably satisfied that the applicant has served a copy of the application, and any documents accompanying the application, on the other party; and
· the parties have been given a reasonable opportunity to make representations; and
· I am reasonably satisfied that the extension of time is appropriate.
16. I am satisfied that the first two ‘dot-points’ above have been complied with.
17. In ABW Australia Pty Ltd v Sears, Roebuck and Co (1998) 42 IPR 468, the hearing officer stated that there are five matters to be considered when considering the whether the grant of the application for extension of time is appropriate:
· the length of time already allowed;
· the reasons put forward to justify the granting or rejection of the extension application;
· whether the opponent has established that its opposition is serious;
· the inconvenience likely to be suffered by the parties;
· the public interest.
18. In Exxonmobil Oil Corporation v Shahin Enterprises (2002) 55 IPR 630, I summarised the position as being governed by cases such as Vangedal-Nielsen v Smith (Cmr of Patents) (1980) 3 ALN N21; 33 ALR 144; 1A IPR 731; and Lyons v Registrar of Trade Marks (1983) 50 ALR 496; 1 IPR 416. The guidelines developed from these decisions can be summarised as follows:
· the applicant seeking the extension of time has to make out a proper case;
· there must have been no undue delay on the part of the potential opponent;
· the private interests of the applicant and the opponent as well as the public interest are considered by ensuring that invalid rights are not granted and that proceedings are not protracted;
· there is a serious opposition in train.
19. The relevant date here is the date of the application for extension which the delegate stated she intended to refuse – 19 May 2008. And the onus is on the applicant to satisfy me, at least on the balance of probabilities, that the extension of time was appropriate at that date.
20. In his submissions made in lieu of the hearing Mr Scott says that it critical to keep the following timeline in mind which he gives as:
· 17 May 2007: acceptance of application 1156865 VOLKSWORLD advertised in the Official Journal of Trade Marks. Was accepted under the provisions of section 44 of the Trade Marks Act 1955.
· 16 July: notice of opposition filed by opponent.
· 25 July 2007: opponent made request made under the provisions of the Freedom of Information Act for a copy of the Trade Marks Office file for application 1156865 (the July FOI Request). Evidence filed by the applicant is highly relevant for the opposition given the application was accepted on the basis of prior continuous use.
· 16 October 2007: opponent seeks an extension until 17 January 2008 and indicates that it is awaiting the results of the July FOI Request.
· 22 November 2007: opponent receives the results of the July FOI Request. In the evidence filed, the applicant claims to have used the applied for mark since 19 January 1972.[3]
· 17 January 2008: opponent seeks extension until 17 April 2008 on the basis that there were delays in receiving the results of the July F01 Request and further time was required to complete the evidence.
· 17 April 2008: opponent seeks extension until 17 April 2008 on the basis that there were delays in settling evidence with the local witness and because the evidence required input from the opponent itself, based in Germany
· 19 May 2008: opponent seeks extension until 17 June 2008. It is outlined that a principal statutory declaration had been prepared, that further time was required to settle the declaration and that a principal of Spruson & Ferguson was visiting the opponent in Germany and would be discussing this matter and settling the evidence in support.
· 28 May 2008: the Registrar indicates that she intends to refuse the extension application.
· 10 June 2008: the opponent requests a hearing on the Registrar's intention to refuse the extension application.
[3] The applicant for registration’s claimed use is from May 1976.
21. I will explain now that an FOI request was received from the applicant for extension in relation to the official file on 26 July 2007[4] and the FOI Officer advised the applicant for extension on 7 August 2007 that the FOI charge would be $85.25, that the FOI application would not be processed until the charge was paid, and unless the charge was paid by 6 September 2007 the application for FOI would be treated as withdrawn. There was no response from the applicant for extension. The FOI Officer sent the applicant for extension a reminder letter on 21 September 2007 and the charge was subsequently paid by the applicant for extension on 3 October 2007. Thus the picture painted by the bald iteration of the timeline, above, is not what it might initially appear to be. There was a delay of nearly two months before the applicant for extension paid the FOI charge. In fact, when the applicant for extension made its request for the first extension of time to serve evidence in support on 16 October 2007, the FOI process had been underway for only 13 days owing to the delay in payment of the FOI charge by the applicant for extension.
[4] The ‘header’ on the facsimile with the FOI request is, however, dated 27/07/07.
22. The applicant for extension has not explained the delay for two months after the applied-for trade mark was advertised in the Official Journal (and until after a Notice of Opposition was filed) before making an FOI application.
23. In the application for extension dated 17 January 2008, the applicant for extension gave the assurance in a statutory declaration, “work has now commenced on the preparation of the evidence in support.” In the declaration in support of the application for extension dated 17 April 2008, Mr Scott declared that a comprehensive declaration had been prepared and, “There have been some delays in preparing final aspects of this declaration … the evidence gathering process is complex given that the evidence requires input from both Germany and Australia.”
24. In the declaration in support of the application for extension dated 19 May 2008 it was sworn that, “My firm prepared a comprehensive declaration which will form the evidence in support … my firm has had a conference with a representative of Volkswagen Australia … [but] … additional time is required in order to settle this declaration. [And] A principal of my firm is visiting Volkswagen AG in the latter half of May with a view to discussing this matter and settling the evidence.”
25. It is not explained who the principal is who was to visit Volkswagen AG in Germany nor is there any declaration from this principal as to why the visit to Germany to settle the evidence became necessary if the comprehensive declaration had then existed for a month. If any evidence was to be forthcoming from Volkswagen AG as a result of this visit, this evidence is not identified. It is not explained why, if Volkswagen AG wished to supplement, amend or approve the declaration, this could not be achieved by teleconference, or email or facsimile transmission of the comprehensive declaration.
26. Neither is it explained in the statutory declarations who the representative of ‘Volkswagen Australia’ is, why he or she was unavailable at around 17 April 2008, or why some other person from ‘Volkswagen Australia’ could not supply the information or approval needed to ‘settle’ the declaration.
27. Considered thus far, the applicant seeking the extension of time should be hard pressed to satisfy me that it had in its declarations (at the relevant date of 19 May 2008) made out a proper case or that the delay in serving and filing of its evidence was not undue. The delays in seeking then obtaining the FOI material on the part of the applicant for extension total some four months[5] and there is not enough detail within, or objective support for, the declarations for me to determine that a grant of an extension from 19 May 2008 would be reasonable.
[5] That is a two month period after the acceptance before filing the FOI application and then a two month delay in paying the charge.
28. And, if the delays (and the explanations for them) reflect the seriousness with which the applicant for extension views the opposition, one should be slow to be satisfied that the opposition is viewed as being serious by the applicant for extension.
29. However, the applicant for extension appears to rely on the fact that the material proposed as evidence in support was submitted to the Trade Marks Office and the applicant for registration on 21 July 2008, and before the scheduled hearing, as in some way justifying or excusing its delays – although this is, of course, well after the relevant date - 19 May 2008. So, it is natural under such circumstances to consider the material submitted in general terms and assess whether the delay was justified.
30. It is not apparent to me that any exhibit material in the leading declaration originated in Germany – the date of first user of the trade mark VOLKSWAGEN in Australia is given by Mr Angelis as 1954 in Australia as a result of his own enquiries and the history of the applicant for extension is the Internet download dated 7 July 2008 discussed below. Historical examples of the applicant for extension’s trade mark within the declaration are stated by Mr Angelis to be downloaded off the Internet.
31. The timeline outlined by Mr Scott, and the reasons in the declarations filed by the applicant in support of its extension requests, also appear to be inconsistent with some of the other material which is proposed to be evidence in support in this matter.
32. Exhibit 1 to Mr Scott’s declaration is a printout from the applicant for extension’s data-base showing its world-wide trade mark registrations. This material bears print-dates which shows that it was printed from a data-base on the 10th and 11th of July 2008. It not obvious to me why this material – or the other material at exhibit 2 to Mr Scott’s declaration – which is public record material showing that trade marks VOLKS-DRAG’N and VOLKSAUTO and the domain name volkswagen.org have been rejected or refused in other jurisdictions – could not have been obtained at a much earlier date.
33. Further, Nicholas Angelis in his declaration states at paragraph 22, “I am informed by Lance Scott and believe that on 4 June 2008 he caused a search to be conducted of Factiva, Fairfax Digital News Store and NewsBank online databases for all articles featuring the words “Volkswagen” and “volks” and published in Australia at any time.” This date stands in contrast to the applicant’s assurance in its statutory declaration on 17 April 2008 that a comprehensive declaration had been prepared and that the delay was due to coordination of inputs from the applicant for extension in Germany and ‘Volkswagen Australia’.
34. Similarly, the material in the Angelis declaration at Exhibit 1 concerning the history of the applicant for extension is material from its Internet site. This material was downloaded on 7 July 2008.
35. Materials from the applicant’s website which are exhibit 6 to the Angelis declaration were also downloaded on 7 July 2008.
36. Materials at exhibits 10 and 11 to the Angelis declaration are Internet printouts dated 8 July 2008.
37. And, lastly, exhibit 12 to the Angelis declaration (which brings into evidence the applicant for registration’s website) was downloaded from the Internet on 8 July 2008.
38. All of the exhibit material to the Angelis declaration appears to have been sourced within Australia and where dates can be confidently attributed to this material these dates are from after the advice from the delegate on 28 May 2008 notifying the applicant for extension that she intended to refuse the application further extension of time. All of this points, in my opinion, to the ‘comprehensive declaration’ being prepared by the applicant for extension after 4 June 2008 and not, as claimed by the applicant for extension, before 17 April 2008.
39. Viewed from this perspective, the material which has been put in appears to confirm that the additional time that the applicant for extension requested in which to serve and file its evidence in support is unreasonable and the result of undue delay and its sworn reasons and explanations given when requesting the further extension could be best regarded as being unsupported by the material it proposes as evidence in support.
40. An alternate explanation for the apparent discrepancies between the events attested to in the declarations filed in support of applications for extension and the antecedents of the material which is proposed as evidence in support is that the ‘comprehensive declaration’ referred to in those declarations was never completed and what has been presented to the Trade Marks Office and the applicant for registration is something else which was prepared when it became apparent that the ‘comprehensive declaration’ could not be ‘settled’ in time. However, the applicant for extension does not explain if this is the case or not and so this does not advance its arguments for grant of the extension of time.
41. Neither do I think that the applicant for extension of time has established that its opposition is a serious one. The specific grounds which the applicant for extension intends to pursue out of the plethora of grounds mentioned in the Notice of Opposition are not addressed in any of the declarations filed in support of the applications for extension of time filed by the applicant for extension although Mr Scott does make written submissions that a serious opposition is foreshadowed. In his submissions he does not say why this is a serious opposition or specify which of the grounds in the Notice of Opposition will be pursued by the applicant for extension in its prosecution of its opposition.
42. The material which was the subject of the FOI request has not been exhibited to (or its verity challenged within) either of the declarations which are proposed as evidence in support and thus the applicant for extension apparently accepts that the applicant for registration has used the applied-for trade mark since 1976. Neither of the declarations proposed as evidence in support cite instances of deception or confusion arising from the use of the applied-for trade mark by the applicant for registration. Given the claimed prior use of the applied-for trade mark for some thirty years, this also goes to the seriousness of the opposition – see Shahin, above.
43. The apparent lack of urgency with which the applicant responded to the delegate’s warnings that she intended to refuse further application for extension also reflects on the seriousness of the opposition as does the lack of detail in, and absence of objective support for, the reasons given for the delays.
44. And, where much of the evidentiary materials which are proposed to be evidence in support relates to dates much later than the priority date of the opposed application, as here, it very much goes to the relevance of the material on which the applicant for extension wishes to rely. This seeming lack of relevance in materials which presumably would be argued to go to establish the reputation of the opponent’s trade mark[6] also reflects on the seriousness with which the applicant for extension regards the opposition.
[6] The relevant date of the reputation of a trade mark relied upon under section 60 of the Act is the priority date of the opposed application: McDonald's Corporation v Bowditch (1999) 48 IPR 433.
45. Mr Scott says in his submissions that the applicant for registration cannot claim to have suffered any prejudice because of the delays since he claims to have used the applied-for trade mark since 1976. I do not agree – an applicant is entitled to have the exact nature of an opponent’s evidence and allegations, and the grounds to which they are said to go, brought before him in a timely manner, especially where such apparent use of the trade mark has been unchallenged. The applicant for registration is a businessman and business people depend on certainty, procedural promptness and fairness.
46. Further, when the issue of the applicant for registration’s claimed use of the applied-for trade mark is viewed from the perspective of the balance of conveniences to the parties, this obviously swings in the direction of the applicant for registration who has the presumption of registrability under section 33 of the Act on his side as opposed to an opponent who bears the onus of establishing its opposition under section 55 of the Act. The presumption of registrability of the applied-for trade mark and the onus on an opponent, considered in the context of the applicant for extension’s delays, does not sit well with Mr Scott’s submission that, “To refuse the opponent leave to serve its evidence in support of the opposition would be at odds with the forensic process and we respectfully submit the Registrar would not be fulfilling her administrative responsibilities.” The delays in these proceedings have been the applicant for extension’s delays, not the Registrar’s. The forensic process is outlined in the Trade Mark Regulations at regulation 5.15 which states that the Registrar must not allow an extension of time unless reasonably satisfied that the extension of time is appropriate.
47. As regards the public interest, as well as there being a public interest in not allowing deceptive or confusing trade marks to be registered, there are further interests in having the administration of the Register proceed in a timely and predictable manner and in having the Register promptly reflect the state of the marketplace.
48. The applicant for extension appears to have regarded the grant of its request for extension of time as a given, provided the declaratory material could be submitted to the applicant for registration and the Registrar before the hearing of the matter. This is not so – the relevant date was 19 May 2008 and the regulations are quite specific and state I must not grant an extension of time unless I am reasonably satisfied it is appropriate.
49. Having regard to all of the above factors, I am not satisfied that the applicant for extension has made out a proper case in its application for extension of time in which to file its evidence in support or that the grant of the extension of time is reasonably appropriate and I refuse the application for extension of time to serve and file evidence in support made on 19 May 2008. It follows that those applications for extension of time made subsequently on 17 June 2008 and 17 July 2008 are redundant.
Iain Thompson
Hearing Officer
Trade Marks Hearings
08 September 2008
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